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deferred examination

February 13, 2017

Over the course of the past 10 years or so, the ILPTO has been moving in the direction of speeding up examination of patent applications. Most noticeably, the ILPTO has significantly increased the number of examiners, but it has also put procedural mechanisms into place to ensure that the queue of applications keeps moving along. The most obvious among these procedural mechanisms have been the adoption of limits on the total amount of extension time that may be obtained during substantive prosecution; and the restricting of the time at which suspension of examination may be requested (to a brief window before the commencement of substantive examination), as well as the limitation of the duration of such suspension (now, unofficially, down to one year maximum).

At a meeting in March 2016 between an AIPLA delegation and Commissioner Asa Kling, he indicated that by the end of 2017 the office was slated to increase the examiner pool by nearly 50%, from about 100 to about 150. I pointed out that employees cost money, and a less expensive solution to hiring additional examiners would be to facilitate a delayed examination scheme, similar to what exists in Canada, Japan and many other countries. Under such a scheme, an applicant would be given a period of several years in which to file a request for examination. If no such request was filed within the period, application would be deemed abandoned. This way, the ILPTO would only have to examine those cases that were actually of interest to the applicant after the set time period; presumably, a certain percentage of cases would thus fall by the wayside, obviating the need for examination and the examiners to conduct that examination.

Mr. Kling’s response was evasive: Effecting such a change in procedure would require a statutory amendment, he said, adding, rhetorically, Do you know how long it would take to get such a change enacted?

I disagree with that view: I think there’s a way to implement delayed examination under the existing statutory framework. Moreover, I think that the ILPTO’s current practice of collecting a fee for suspending examination has no legal basis; but my proposal would enable the PTO to continue to collect those fees in a legal manner. Specifically:

As noted, presently the ILPTO will let an applicant request a suspension of examination at one and only one stage of prosecution: after responding to the pre-examination letter (essentially an IDS submission requisitioned by the ILPTO) and before the issuance of a first substantive office action on the merits of the case. Although it’s not written anywhere, the ILPTO will limit that suspension to one year. And – here’s the kicker – it makes the applicant pay for that suspension.

I call that a “kicker” because the Commissioner is authorized to charge applicants for extensions. But extensions are needed when an applicant responds to the ILPTO. Here, the applicant has already responded to the pre-examination letter, so there’s nothing outstanding due from the applicant. Which means that, even though the ILPTO calls this fee an “extension” fee, in fact there’s no extension whatsoever involved. Which in turn means that the ILPTO is acting illegally in collecting a fee it’s not allowed to collect. In view of the fact that the ILPTO was sued a few years ago for collecting fees for actions it didn’t subsequently take, you’d think it would be sensitive about these things, but apparently not.

What I propose is to use the commissioner’s extension power to implement a de facto deferred examination program – and to simultaneously legitimize its collection of fees for suspension. The procedure is pretty simple: instead of making applicants request suspension after responding to the pre-examination letter, the Commissioner should just say that he’s willing to grant a long period of extension – say somewhere in the 36-44 month range – beyond the statutory four months that applicants have to respond to the pre-examination letter. This is well within the Commissioner’s power. The ILPTO could collect extension fees for this period; this is also within the commissioner’s power. Ta-da! You now have a deferred examination regime – one that’s legal in all aspects, and that preserves the office’s ability to collect fees.

The effect of this would be to allow applicants to decide when, if at all, they want substantive examination to begin, within a defined window. If and when they want substantive examination to commence, they would pay the extension fee due and respond to the pre-examination letter, and the office would begin substantive examination.

Mr. Kling reportedly has only a few more months left in office. This is a step he could implement immediately, to good effect. I urge him to take it.